INTERNATIONAL & COMPARATIVE PATENT LAW FINAL EXAMINATION
IPSI 1999
Professor Hans Goldrian

Instructions:
This is a two-hour open book exam. You may consult any written materials, yet your examination must be your own work. Consideration of the problems outside the exam room or discussion with any other persons during the exam period is not permitted.

Organize your answers before you begin to write an try to keep your answers concise and clear.,

Write your answers in the bluebook supplied, but please use only one side of the page and observe the margins. Please write as legibly as possible!

Grading will be anonymous; please do not put your name on anything you turn in. Be sure your examination 'number is on each bluebook you turn in.

I.  [15 points] Mr. A, Owner of a small company in Munich, Germany, reads in a technical journal published in London, England, on May 2, 1999, the description by a certain Mr. B of a tool of new design. The article also contains the remark "European and US patents applied foe' without an indication of the designated countries and the application date.

Mr. A believes that such a tool has beer- invented by himself in October 1998. He now regrets that he did not file any patent application though he has made preparations for marketing since October 1998 and actually started to sell in February 1999.

He asks a patent attorney for advice whether he has any chance for patent protection and whether his business will be affected by patents taken out by B.

What would you tell Mr. A with respect to:

a) the situation in EPC countries
b) the German situation in particular
C) the situation in the USA

d) the situation in other countries

II  [5 points] Professor G, doing semiconductor research work in an American university,
has made an invention and published it in a scientific journal. There upon company H
gets in touch with him and wants to buy the invention and to file patent applications in
the US and the EPO. What would you recommend?

III. [10 points] Define the term "exhaustion". Does exhaustion affect the existence of a patent? What, precisely, is the effect of an exhaustion of a patent right?

IV. [5 points] In countries with the first-to-file system, is it possible that the later applicant,
and not the earlier, has the right to the patent?

V. [10 points] L, a French company, has corresponding patents in France, Great Britain,
Germany, Italy, and the US, on a component. M, a British company manufacturing and
selling electronic devices, needs such patented components for its devices and buys them
from L.

Can M sell the devices, comprising such components bought from L,

a) in Great Britain
b) in France
C) in the USA

VI. [10points] R, a US company, has filed allS patent application on May 14,1998 with
no intention to file, or market the protected product, abroad. However, a new evaluation
of the business situation reveals that there are chances in Europe and a European patent
would be desirable. Since the product has already been marketed in the US, it would be
necessary to claim the priority of May 14, 1998.

The management decision is made in the morning of May 14,1999. It seems to be too late to send an order letter to a European patent attorney. So the CEO tells his secretary to prepare a telefax comprising a request for the grant of a European patent, an identification of the applicant, a claim of the US priority date, and the complete application documents; description, claims and drawings. Duly signed, this fax is transmitted directly to the EPO and arrives there in the afternoon of May 14, 1999.

Was that a practicable way to save the priority? Is some rule not complied with?

VII. [5 points] In the case outlined above, is there another way to save the priority?

VIII. [15 points] Company S and company T, both in the US, are active in the field of cellular phones. In a symposium, some physicians explain their concern that the relatively high transmitting power of such a phone, when held to the head could be harmful for the physiology of the brain. Shortly thereafter, in both companies independently there was conceived a set consisting of a cellular transmitting and receiving unit to be kept in the pocket of the user and a handset co-operating with the cellular unit in the manner of the cordless phone, with only a fraction of the transmitting power used by the cellular unit, to reduce the exposure of the brain.


The inventions were conceived in A on February 10, in B on February 19, 1998. Both companies file patent applications in the US, A on March 17, B on March 12, 1998 and European patent applications claiming, respectively, the US priority: A on March 16, 1999 designating GB, FR, DE, IT, CH and B on March 12, 1999, designating GB, FR, DE, NL, BE.

Assuming that the requirements for patenting are met, which company will finally have patents in which countries?

IX. [10 points] After grant, a European patent disintegrates into national patents in the
designated countries, and national law prevails ( ART.64 EPC)
There are, however, some provisions of the EPC which govern the interpretation and validity of these national patents (the "European Core").

Name some of the most important of these provisions.

X. [5points] ART. 133.2 and 134 EPC regulate the professional representation before the

EPO. If the EPO acts as ISA and IPEA for a PCT application, is the national patent
attorney of the applicant permitted to represent before the EPO?

XI. [10 points] During the IPE, the applicant receives an "opinion" to which he may respond, even amending the application documents. What should be considered for the decision what action to take?


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